In a patent infringement dispute that has been ongoing since 2007, the law firm of Heuking Kühn Lüer Wojtek achieved an important victory on behalf of BIOTEC Biologische Naturverpackungen GmbH & Co. KG (Emmerich): The Tribunal de Grande Instance, Paris, dismissed the patent infringement complaint brought by Italian bioplastics manufacturer Novamont S.p.A. in its entirety.

In addition, the French court annulled one of the three patents (EP 0327505, EP 0937120, EP 0947559) that were the subject of the litigation on the grounds of the nullity counterclaims brought.

Some three years ago, Novamont S.p.A. filed lawsuits against both BIOTEC and against its French shareholder, SPhere SA, in Paris, Turin, and Milan. Novamont S.p.A. claimed that BIOTEC would infringe the three aforementioned patents. SPhere SA was sued since the company markets the relevant product in Europe.

BIOTEC is a leading developer and manufacturer of biodegradable materials distributed under the Bioplast label. The company’s core products include fully biodegradable bioplastics based on potato starch used for the production of various products such as plastic bags. This market is gaining in importance worldwide as crude oil-based plastic materials are replaced by biodegradable alternatives. For example, in France and many other countries, conventional plastic bags are prohibited by law so that biodegradable bags may gain unprecedented market shares. Accordingly, the market is highly competitive.

The first instance judgment of the Tribunal de Grande Instance is not yet final and may be appealed. Decisions in the two patent infringement proceedings in Turin and Milan are not yet available and are expected by the end of 2010.

BIOTEC was advised by lawyers Dr. Anton Horn (Partner) and Melanie Künzel, LL.M. (Associate) of Heuking Kühn Lüer Wojtek’s Düsseldorf-based patent law team. They led and coordinated all proceedings and commissioned local law firms to act as attorneys of record. Dr. Arwed Burrichter (COHAUSZ & FLORACK, Düsseldorf) provided considerable support with respect to the chemical and technical aspects and regarding the nullity of the three patents-in-suit.

Lawyers Julien Horn and Francine Le Péchon-Joubert of De Gaulle Fleurance (Paris) and patent law firm Novagraaf (Eric Enderlin and Nadège Lagneau) advised in the now successfully concluded French trial.

In Italy, BIOTEC is represented by the Milan-based law firm of Trevisan & Cuonzo (Gabriel Cuonzo and Laura Orlando) and patent law firm Barzano & Zanardo (Antonella de Gregori).

Novamont S.p.A. is represented in both France and Italy by lawyers of the law firm of Lovells LLP (France: Dominique Ménard; Italy: Prof. Luigi Mansani and Giovanni Ghirardi).